Card-Monroe Corp. v. Tuftco Corp.

270 F.Supp.3d 967

CARD–MONROE CORP., Plaintiff,

v.TUFTCO CORP., Defendant.

Case No. 1:14–cv–292

United States District Court, E.D. Tennessee, Southern Division, AT CHATTANOOGA.

Filed September 1, 2017

David R. Boaz, Womble, Carlyle, Sandridge & Rice, LLC, Raleigh, NC, John F. Morrow, Jr., Womble, Carlyle, Sandridge & Rice, LLC, Winston–Salem, NC, David Scott Sudderth, Pro Hac Vice, Preston Hamilton Heard, Pro Hac Vice, Womble, Carlyle, Sandridge, & Rice, LLP, Atlanta, GA, Joseph R. White, W. Ferber Tracy, Joseph Alan Jackson, II, Spears, Moore, Rebman & Williams, Chattanooga, TN, for Plaintiff.

C. Celeste Creswell, Kabat Chapman & Ozmer LLP, Dalton, GA, Douglas T. Johnson, Kyle J. Wilson, Miller & Martin, PLLC, Joe A. Conner, John M. Phillips, Thomas O. Helton, Adam Charles Sanders, Baker, Donelson, Bearman, Caldwell & Berkowitz, Chattanooga, TN, for Defendant.

AMENDED MEMORANDUM AND ORDER¹

TRAVIS R. MCDONOUGH, UNITED STATES DISTRICT JUDGE

Before the Court are: (1) Defendant Tuftco Corp.'s ("Tuftco") motion to strike and for sanctions (Doc. 317); (2) Tuftco's motion for summary judgment (Doc. 450); and (3) Plaintiff Card–Monroe Corp.'s ("CMC") motion for summary judgment (Doc. 289). Having considered the record, the parties' written submissions, and their oral arguments at the hearing on July 14, 2017, the Court hereby DENIES Tuftco's motion to strike and for sanctions (Doc. 317) and GRANTS IN PART and DENIES IN PART the parties' summary judgment motions (Docs. 289, 450).

I. BACKGROUND

1. The Patents

The three patents at issue concern certain carpet-tufting machines and methods. U.S. Patent No. 8,141,505 (the " '505 Patent"), entitled "Yarn Color Placement System," was issued by the United States Patent and Trademark Office ("PTO") on March 27, 2012. (Doc. 292–1, at 1–17.)² U.S. Patent No. 8,359,989 (the " '989 Patent"), entitled "Stitch Distribution Control System for Tufting Machines," was issued on January 29, 2013. (Id. at 18–51.) Finally, U.S. Patent No. 8,776,703 (the " '703 Patent") (collectively, the "Asserted Patents"), entitled "Yarn Color Placement System," was issued on July 15, 2014. (Id. at 52–68.) The '989 Patent and '703 Patent are continuations of the '505 Patent and, as such, contain similar specifications. (Id. at 12, 40, 63.) CMC is the owner by assignment of all rights, title, and interest to the Asserted Patents.

The invention, marketed as "ColorPoint," "generally relates to tufting machines, and in particular, to a system for coordinating the feeding and placement of yarns of different colors within a backing material passing through a tufting machine to enable formations of free-flowing patterns within a tufted article." (Id. at 12, col. 1:11–15.)³ According to the Asserted Patents' specifications, before ColorPoint, the carpet tufting industry sought "new, more eye-catching" patterns that "replicate the look and feel of fabrics formed on a loom." (Id. , col. 1:20–25.) Though manufacturers could produce more vibrant patterns with specialty machines that individually placed yarns with a single needle, they could not produce those patterns on a commercial scale. (Id. , col. 1:35–54.) CMC presented ColorPoint as the solution to this industry limitation. By coordinating yarn feed, needle bar shifts, and the feeding of backing material through the tufting machine, multiple colors of yarns are inserted at the same stitch location. (Id. at 12–16.) Unwanted yarns (those not called for in a design) are then pulled low or out of the backing so they cannot be seen in the carpet's face. (Id. ) CMC's new method inserts a higher number of yarns into the backing than traditional tufting methods, while avoiding gaps between visible tufts in the face of the carpet. (Id. ) The resulting products accommodate more intricate pattern designs while preserving sharpness and definition. (Id. )

2. The Claims

On February 8, 2016, the parties identified twelve claims to be severed for ongoing proceedings: Claims 8, 10, and 12 of the '505 Patent ; Claims 21, 22, 24, 27, 28, and 30 of the '989 Patent ; and Claims 1, 28, and 29 of the '703 Patent (together, the "Severed Claims"). (Doc. 169.) Claim 1 of the '703 Patent is the only machine claim at issue herein (the "Machine Claim"); the rest are method claims (the "Method Claims").

i. Claims 8, 10, and 12 of the '505 Patent

Claim 8 recites:

A method of operating a tufting machine to form patterned tufted articles having multiple colors, comprising:

feeding a backing material through the tufting machine;

feeding a plurality of yarns to a series of needles carried by a shiftable needle bar;

shifting the needle bar transversely according to a programmed shift profile for the pattern of the tufted article;

controlling the feeding of the yarns to the needles in accordance with programmed pattern instructions so as to feed desired amounts of the yarns to the needles as needed to form rows of high and low tufts of yarns in the backing materials;

forming the tufts of yarns at an increased effective stitch rate determined by multiplying the number of colors being formed in the patterned tufted article by a desired fabric stitch rate that comprises a number of stitches per inch desired for the patterned tufted articles; and

wherein the feeding of the yarns to form the high and low tufts tracks the shifting of the needles so as to substantially maintain density of the tufts of yarns being formed in the backing material in a direction of the rows of tufts and location of the high tufts of yarns at desired positions across the backing to form the patterned tufted articles.

(Doc. 292–1, at 16, col. 10:39–61.)

Claim 10, which is dependent on Claim 8, recites:

The method of claim 9⁴ and wherein feeding a second, lesser amount of yarn comprises back-robbing the yarns fed to each needle to an extent sufficient to substantially hide or remove the low tufts from the backing.

(Id. at 16–17, cols. 10:66–11:2.)

Claim 12, also dependent on Claim 8, recites:

The method of claim 8 and wherein the tufting machine is a 1/10th gauge tufting machine and the desired fabric stitch rate is approximately ten stitches per inch.

(Id. at 17, col. 11:6–8.)

ii. Claims 21, 22, 24, 27, 28, and 30 of the '989 Patent

Claim 21 recites:

A method of operating a tufting machine to form a patterned article including a series of different yarns, comprising:

receiving a pattern including a series of pattern steps for forming the patterned article;

determining an effective process stitch rate for the patterned article;

feeding a backing material through the tufting machine at the effective process stitch rate;

as the backing material is fed through the tufting machine, reciprocating a series of needles to deliver the yarns into the backing material; and

controlling feeding of the yarns to the needles in accordance with programmed pattern instructions to retain a tuft of a desired yarn for each stitch being formed in the backing material

wherein determining the effective process stitch rate for the patterned article comprises increasing the desired stitch rate for the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned article.

(Id. at 50, col. 21:28–49.)

Claim 22 recites:

A method of tufting a patterned article, comprising:

determining a desired fabric stitch rate for the patterned article;

feeding a series of yarns to a series of spaced needles;

feeding a backing material through a tufting zone;

as the backing material is fed through the tufting zone, reciprocating the needles carrying the yarns into and out of the backing material;

shifting at least some of the needles transversely with respect to the backing material; and

at selected stitch locations, presenting a number of different yarns for insertion into the backing material and controlling the yarn feed to the needles so as to retain at least one desired yarn of the different yarns presented for each selected stitch location;

wherein feeding the backing material comprises moving the backing material through the tufting zone at an effective stitch rate approximately equivalent to the desired fabric stitch rate increased by an amount based upon a number of different yarns presented at a stitch location being tufted.

(Id. , cols. 21:50–22:3.)

Claim 24 recites:

The method of Claim 22 and wherein presenting a number of different yarns and controlling the yarn feed to the needles comprises presenting a yarn of each color that could be tufted at a particular selected stitch location and feeding the yarn for a color corresponding to the selected stitch location to form a tuft, while controlling feeding of the yarns of remaining colors to pull such yarns low or remove them from the selected stitch location.

(Id. , col. 22:9–16.)

Claim 27 recites:

A method of tufting a patterned article comprising:

determining a desired fabric stitch rate for the patterned article;

feeding a series of yarns to series of spaced needles;

determining an effective process stitch rate for the patterned article, comprising increasing the desired stitch rate for the pattern by a multiple approximately corresponding to a number of colors of yarns used to form the patterned article;

feeding a backing material through a tufting zone;

as the backing material is fed through the tufting zone, reciprocating the needles carrying the yarns into and out of the backing material;

shifting at least some of the needles transversely with respect to the backing material; and

at selected stitch locations, presenting a number of yarns for insertion into the backing material and controlling the yarn feed to the needles so as to retain at least one desired yarn of the yarns presented for each selected stitch location.

(Id. , col. 22:25–45.)

Claim 28 recites:

A method of forming tufted patterns in a backing, comprising:

determining a desired fabric stitch rate for a pattern to be formed;

feeding the backing material through a tufting machine;

as the backing is fed through the tufting machine, reciprocating a series of

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